World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Osram AG v. Execom

Case No. D2012-0948

1. The Parties

The Complainant is Osram AG of München, Germany, represented by Hofstetter, Schurack & Skora Patent-und Rechtsanwälte, Germany.

The Respondent is Execom of Mexico City, Mexico.

2. The Domain Name and Registrar

The disputed domain name <osram-mexico.com> (the “disputed Domain Name”) is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2012. On May 4, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed Domain Name. On May 4, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2012.

The Center appointed Nicoletta Colombo as the sole panelist in this matter on June 12, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of the trademark OSRAM, which is also the dominant element of the Complainant’s trade name. The Complainant has traded under the name “Osram” since its foundation in Germany in 1919, and is one of the largest lighting manufacturing companies.

The Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions; in particular owns 100 international OSRAM trademarks. Moreover, the Complainant owns 160 domain names based on the denomination “Osram”, covering both gTLDs and ccTLDs.

In July 2011 the Complainant has been transformed into a joint stock company.

Numerous prior UDRP decisions have discussed the international notoriety of the Complainant’s OSRAM trademarks (see e.g., OSRAM GmbH诉Shanghai Huchuang Electronic Technology Co. Ltd., WIPO 案件编号D2011-0272, Osram GmbH v. limingshu, WIPO Case No. D2010-0091, OSRAM GmbH v. Transure Enterprise Ltd., WIPO Case No. D2008-1032 and Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083).

The Respondent has registered the disputed Domain Name on January, 7, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

A.1. The disputed Domain Name is identical or confusingly similar to the trademark owned by the Complainant because:

- it reproduces the trademark and the trade name of the Complainant in its entirety;

- the addition of the word “mexico” placed at the end of the disputed Domain Name and the addition of the top-level domain “.com” can be classified as non-distinctive generic wording and are not sufficient to avoid the likelihood of confusion. It is predictable that the Internet users will interpret the “mexico” as a simple indication of a location.

A.2. The Respondent has no rights or legitimate interests in respect to the disputed Domain Name because:

- the Respondent has no registered trademarks OSRAM or any similar trademark;

- the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services;

- the Respondent is not an authorized dealer, distributor or licensor of the Complainant, nor is the Respondent in any way associated with the Complainant. Moreover the Respondent is in no way authorized or affiliated with the Complainant.

A.3. The disputed Domain Name was registered and is being used in bad faith because:

- the Respondent’s website under <osram-mexico.com> leads to competing lighting products and therefore the Respondent certainly must have knowledge about the worldwide well-known trademark of the Complainant;

- the Respondent uses the dispute Domain Name to attract, for commercial game, Internet users to its website by creating likelihood of confusion with the Complainant’s trade name and trademark OSRMA.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed Domain Name <osram-mexico.com> incorporates the word “osram” which constitutes the Complainant’s trademark and trade name.

The only difference between the disputed Domain Name and the trademark of the Complainant is the addition of the word “mexico”. The addition of the mentioned word, which is a country name, does not add a distinctive element to the disputed Domain Name and does not render it dissimilar to the trademark of the Complainant. Moreover, such addition increases the likelihood of confusion between the disputed Domain Name and the Complainant’s trademark, because the term “mexico” will be considered by the Internet users as a simple indication of a place where the Complainant should be active.

It has been established by numerous prior UDRP decisions that the combination of a trademark with the name of a country to form a domain name does not avoid a likelihood of confusion (see, e.g., dm-drogerie markt GmbH + Co. KG v. Aleksey Maksimyuk, WIPO Case No. D2011-0589, L’Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231, Niit Limited v. Admin, Jucco Holdings, WIPO Case No. D2007-0037, Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corporation v. Atma Estate, WIPO Case No. D2006-1231, Dollfus Mieg et Compagnis (DMC) v. Jesse, WIPO Case No. D2002-1137, and Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171).

Additionally, the Panel does not consider, when analyzing the identity or confusing similarity, the suffix, in this case, “.com” because it is a necessary component of the disputed Domain Name and does not give any distinctiveness (see e.g., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).

Therefore the Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s trademark and trade name.

B. Rights or Legitimate Interests

The Complainant has several trademark registrations for OSRAM and owns several domain names comprehensive of the trademark OSRAM, which is also part of its trade name. Therefore it has been proven that the Complainant has rights in the OSRAM trademark.

The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests in the disputed Domain Name, on the part of the Respondent, see paragraph 4(c) of the Policy (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840; UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).

Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark OSRAM, nor has the Respondent been authorized to register and use the disputed Domain Name.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the disputed Domain Name.

C. Registered and Used in Bad Faith

The disputed Domain Name leads to competing lighting products of the Complainant and therefore the evidence indicates that the Respondent is using the disputed Domain Name in an attempt to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or product or service on the Respondent’s website.

The Respondent must have been aware of the existence of the OSRAM mark owned and used by the Complainant. In this Panel’s view, someone who was already familiar with the Complainant’s mark and its activity would have registered the disputed Domain Name inclusive of such trademark (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A, WIPO Case No. D2004-0131; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001).

From the record available to the Panel, there is no information as to the business activity of the Respondent that would justify the registration and the use of the disputed Domain Name, nor is there evidence of any rights or legitimate interests in the disputed Domain Name by the Respondent. The Panel believes that, in the absence of any rights or legitimate interests, and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of the disputed Domain Name confusingly similar to the Complainant’s trademark was done in bad faith (see Accor v. Howell Edwin, WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

The Panel is of the opinion that the Respondent has registered the disputed Domain Name with the intent to profit from the reputation of the famous trademark of the Complainant, by using the disputed Domain Name that is confusingly similar to the Complainant’s mark.

In this circumstance, taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has established that the disputed Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <osram-mexico.com> be transferred to the Complainant.

Nicoletta Colombo
Sole Panelist
Dated: June 26, 2012

 

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